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Failure to Renew Trademark Registration

What is a Trademark?
A trademark is a word, phrase, logo or other symbol, used to identify a product, the source of a product and the manufacturer or merchant.  It is a good idea for trademark owners to register their trademark with the Patent and Trademark Office. 

What Are the Special Benefits of Registering a Trademark?
Registering a trademark can provide several benefits to the trademark owner, including but not limited to:         
  • Constructive notice to the public of the owner's claim of ownership of the trademark.  Therefore, anybody who later uses the same mark or a confusingly similar trademark may be presumed by the courts to be a "willful infringer" and thus liable for large monetary damages.
  • A legal presumption of ownership of the trademark and the owner's exclusive right to use the trademark in the United States.
  • A basis to obtain trademark registration in other countries.
This does not mean that it is impossible for a trademark owner who has not registered the mark to sue an alleged infringer; the trademark owner may nonetheless be able to seek relief under Title 15 U.S.C. Section 1125, which forbids use of a false designation of origin.  However, it is much easier to prove and win a case, and to collect large monetary damages, if the trademark has been registered.  

How Long Does a Trademark Registration Last?
Once the trademark has been approved by the Patent and Trademark Office, it will be registered for a term of ten years. Six years into the ten-year period, the owner must then file a Section 8 affidavit stating either that the trademark is still in use or that the trademark is no longer in use for legitimate reasons. Otherwise, the registration may lapse. 

What Happens if I Fail to Renew my Registration?
If the trademark owner fails to timely file a Section 8 affidavit before the end of the sixth year following registration, the registration will be cancelled.  Failure to file the Section 8 affidavit to renew a registration does not void all the owners' rights to the mark, but the owner will lose the special benefits of federal registration.  The Patent and Trademark Office will not accept a substitute Section 8 affidavit.  Instead, to retain the special benefits of federal registration, the trademark owner must re-register the trademark with the Patent and Trademark Office.   

Do I Need a Lawyer Specializing in Trademark Law?
The trademark application process can be very complicated, and the Patent and Trademark Office will not offer any assistance in the preparation of application papers. Also, there are several crucial deadlines for maintaining the registration of a trademark.  It is a good idea to hire a trademark attorney to help you with the process of applying for and maintaining a trademark.

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